Monaco v. Hoffman

• Decision Date: 08 December 1960
• Docket Number: Civil Action No. 2026-58.
• Citation: 189 F. Supp. 474
• Parties: Ugo MONACO and Montecatini Societa Generale Per I'Industria Mineraria E Chimica Anonima, Plaintiffs, v. Paul H. HOFFMAN, The Spun Lite Corporation, Waterbury Companies, Inc., and Hoffman Products, Inc., Defendants.
• Court: U.S. District Court — District of Columbia

189 F. Supp. 474

Ugo MONACO and Montecatini Societa Generale Per I'Industria Mineraria E Chimica Anonima, Plaintiffs, v. Paul H. HOFFMAN, The Spun Lite Corporation, Waterbury Companies, Inc., and Hoffman Products, Inc., Defendants.

Civil Action No. 2026-58.

United States District Court District of Columbia.

December 8, 1960.

Harry A. Toulmin, Jr., Dayton, Ohio, for plaintiffs.

E. Seward Stevens, Litchfield, Conn., and Robert I. Dennison, Washington, D. C., for defendants.

HOLTZOFF, District Judge.

The question presented in this case is one of patent law, namely, whether in an interference proceeding, an applicant for a patent who made his invention in a foreign country, is entitled to prove and rely on a date of invention prior to the filing date of his first application.

This is an action under 35 U.S.C. § 146, to review a decision of the Board of Patent Interferences of the Patent Office, on the question of priority as to the right to a patent, for which both the individual plaintiff Ugo Monaco and the individual defendant Paul Hoffman had applied. The Board decided in favor of Hoffman, and the patent issued accordingly. Monaco claims that he is entitled to priority and that the patent should have been granted to him.

The invention involved in this case is a machine and a process for the manufacture of corrugated sheets of fiber glass. On September 13, 1953, Monaco, who developed his invention in Italy, filed an application for a patent in the United States, No. 380,247. He had previously presented a similar application in Italy, No. 13,352, on September 16, 1952. Accordingly, under the International Convention relating to patents and the provisions of 35 U.S.C. § 119, he was deemed entitled by the Patent Office to the filing date of September 16, 1952. Hoffman made his invention in Miami, Florida, and filed an application, No. 321,667, in the United States Patent Office on November 20, 1952.

An interference was declared by the Patent Office and voluminous testimony was taken. The appropriate tribunal of the Patent Office found that Hoffman had conceived the invention and had reduced it to practice not later than July 21, 1952, and on this basis accorded that date to him as the date of his invention. It is not disputed that Hoffman is properly entitled to it. Monaco contended, on the other hand, that he had made his invention in Italy and had reduced it to practice in Milan by April 12, 1952 and that, therefore, he was the prior inventor. The Patent Office excluded this evidence on the ground that in an interference proceeding, an inventor who makes his invention in a foreign country may not carry the date of his invention back of his first filing date, in this case, September 16, 1952.

Monaco then brought this suit, contending that this ruling of the Patent Office was erroneous as a matter of law. He took lengthy depositions in Italy, in order to prove that he had conceived and reduced the invention to practice in Milan by April 12, 1952. While it was not formally conceded, nevertheless, it was not actually disputed that the evidence justified a finding of fact that Monaco established April 12, 1952 as the date of his invention, if as a matter of law he is permitted to claim a date earlier than his first filing date on the basis of his activities in a foreign country. Thus, the only question to be decided is, as indicated at the opening of this opinion, whether in an interference proceeding an inventor who made his development in a foreign country may rely on a date of invention earlier than that of the filing of his first application for a patent.

It seems appropriate to commence the discussion of this question by adverting to some of the basic principles and the fundamental philosophy of the patent law of the United States. The purpose of the patent law is to grant a monopoly for a specified period to a person who makes an original invention and who renders it available to the American people. The successful applicant must invariably be an original inventor, that is he must make the invention himself without copying or imitating the work of any one else. Moreover, he is charged with knowledge of the literature in his field, irrespective of whether he is actually familiar with it and, therefore, he may not be deemed to be an original inventor if the substance of his alleged invention has been previously shown or described in a patent or other printed publication.

In addition to being an original inventor, the successful applicant must also believe himself to be the first inventor, since if he knows that someone had previously made the same invention, he cannot truthfully swear that he is an original inventor. He need not, however, invariably be the first inventor. In fact there are circumstances under which a patent is awarded to a person who is not actually the first inventor. Such exceptions at times arise out of developments achieved by a prior worker in the field who made and used the invention privately and secretly, and then abandoned it.¹ In that event a subsequent worker who is ignorant of his predecessor's accomplishments, but who is an original inventor, may receive a patent. So, too, if a person applies for a patent and then abandons his application and fails to place his invention into public use, or otherwise make it available to others, a later original inventor who is not aware of his predecessor's activities is not barred by this circumstance from securing a patent.² Another example is that of a lost art. There are many arts that have been extinct and forgotten for ages. A person who rediscovers one of them would be entitled to a patent if the subject matter were otherwise patentable, in spite of the fact that obviously he would not be the first inventor. For instance, an interesting question might arise if an artist who paints and constructs stained glass windows were to rediscover and revive a blue or a rose-colored pigment, now unknown, but which was used in connection with the building of medieval Cathedrals. So, too, it has been continuously held that if an inventor makes his invention in a foreign country and it is neither patented nor described in a printed publication, this circumstance would not preclude a subsequent original inventor in this country from receiving a patent.³

In brief, the objective of the patent law is to reward an inventor who makes a contribution to the public weal. Such a contribution is not consummated solely by making the invention. The achievement must also be made available to the public. A person who keeps his talent under a bushel is not entitled to a patent. This general doctrine was discussed by Chief Justice Taney in Gayler v. Wilder, 10 How. 477, 495, 496, 13 L.Ed. 504, as follows:

"The act of 1836, ch. 357, § 6, authorizes a patent where the party has discovered or invented a new and useful improvement, `not known or used by others before his discovery or invention'. And the 15th section provides that, if it appears on the trial of an action brought for the infringement of a patent that the patentee `was not the original and first inventor or discoverer of the thing patented', the verdict shall be for the defendant.

* * * * * *

"And in the 15th section, after making the provision above mentioned, there is a further provision, that, if it shall appear that the patentee at the time of his application for the patent believed himself to be the first inventor, the patent shall not be void on account of the invention or discovery having been known or used in any foreign country, it not appearing that it had been before patented or described in any printed publication.

"In the case thus provided for, the party who invents is not strictly speaking the first and original inventor. * * * Yet his patent is valid if he discovered it by the efforts of his own genius, and believed himself to be the original inventor. The clause in question qualifies the words before used, and shows that by knowledge and use the legislature meant knowledge and use existing in a manner accessible to the public. If the foreign invention had been printed or patented, it was already given to the world and open to the people of this country, as well as of others, upon reasonable inquiry.

"But if the foreign discovery is not patented, nor described in any printed publication, it might be known and used in remote places for ages, and the people of this country be unable to profit by it. * * * "So, too, as to the lost arts. It is well known that centuries ago discoveries were made in certain arts the fruits of which have come down to us, but the means by which the work was accomplished are at this day unknown. The knowledge has been lost for ages. Yet it would hardly be doubted, if any one now discovered an art thus lost, * * * he would be entitled to a patent. Yet he would not literally be the first and original inventor. But he would be the first to confer on the public the benefit of the invention."

For many years the pertinent principles were contained in Section 4886 of the Revised Statutes (U.S.Code, old Title 35, Section 31^*), which reads in part as follows:

"Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, * * * not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than one year prior to his application, and not in public use or on sale in this country for more than one year prior to his application, unless the same is proved to have been abandoned, may * * * obtain a patent therefor."

It will be observed that this provision prevents the issuance of a patent for an invention previously known or used by others in this country. This limitation is expressly restricted to the United...